Appeal No. 2001-0889 Page 7
Application No. 08/459,086
inoperative, the claims are not necessarily invalid. ‘It is not a function of the
claims to specifically exclude * * * possible inoperative substances * * * *’ In re
Dinh-Nguyn, 492 F.2d 856, 858-59, 181 USPQ 46, 48 (CCPA 1974).”). In such a
case, the burden is on the examiner to show that the claims are nonenabled
because “the number of inoperative combinations [is] significant, and in effect
forces one of ordinary skill in the art to experiment unduly in order to practice the
claimed invention.” Id. That has not been shown. The rejection under 35 U.S.C.
§ 112, first paragraph, is reversed.
2. Anticipation
The examiner rejected claims 7-9, 11, 12, 18, 19, 21, 22, 31, and 32 under
35 U.S.C. § 102(b) as anticipated by Chow. Appellant has not stated that the
claims subject to this rejection should be considered separately, nor has he
presented separate arguments. Therefore, the claims stand or fall together and
we have considered claim 7 to be representative. See 37 CFR § 1.192(c)(7).
Claim 7 is directed to antibodies (either polyclonal or monoclonal) that
have “binding affinity” for a peptide of a particular redundant sequence. As the
examiner notes, Chow discloses antibodies to a synthetic peptide corresponding
to amino acids 18-45 of human IFN-β. See page 12220, right-hand column.
Chow’s peptide comprises a sequence corresponding to most of the peptide of
claim 7 where X is the full, 10-amino acid recited sequence, AA1 is Ile, AA2 is Ile,
and AA3 is Lys. Chow’s peptide differs from the peptide recited in claim 7 in that
it includes an additional 12 amino acids at the N-terminus and is missing the
C-terminal Gln and AA4 residues.
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